OPPOSITION No B 2 703 273

 

Body Attack Sports Nutrition GmbH & Co. KG, Schnackenburgallee 217-223, 22525 Hamburg, Germany (opponent), represented by Glawe, Delfs, Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative)

 

a g a i n s t

 

Dariusz Michalczewski, Dzielna 37, 80-404 Gdansk, Poland (applicant), represented by Krzysztof Wasilewski, Twarda 4, 00-105 Warszawa, Poland (professional representative).

 

On 26/09/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 703 273 is rejected in its entirety.

 

2.        The opponent bears the costs, fixed at EUR 300.

 

 

REASONS:

 

The opponent filed an opposition against all the goods of European Union trade mark application No 15 078 686  (figurative).

 

The opposition is based on, inter alia, international trade mark registration No 1 110 977 ‘ATTACK’ (word mark) designating the European Union. The opponent invoked Article 8(1)(b) EUTMR regarding this earlier mark.

 

The opposition is also based on a company name (Body Attack Sports Nutrition GmbH & Co, KG) in Germany in connection with which the opponent invoked Article 8(4) EUTMR.

 

 

 

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 110 977 designating the European Union.

 

 

1. The goods

 

The goods on which the opposition is based are, inter alia, the following:

 

Class 32: Non-alcoholic drinks, fruit juices and fruit drinks; non-alcoholic drinks, namely sports drinks, energy drinks, nutrient drinks, mineral drinks and vitamin drinks; isotonic drinks; dietetic drinks for non-medical use; powders and syrups for the preparation of the aforementioned drinks.

 

The contested goods are the following:

 

Class 32: Energy drinks; Isotonic beverages; Mineral water [beverages].

 

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

 

Energy drinks; isotonic beverages are identically contained in both lists of goods (including synonyms).

 

The contested mineral water [beverages] are included in the broad category of the opponent’s non-alcoholic drinks. Therefore, they are identical.

 

 

2. Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is considered to be average.

 

 

3. The signs

 

ATTACK
Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

The element ‘ATTACK’ of the earlier mark will be understood as ‘an aggressive and violent act against a person or place’ by the English-speaking part of the relevant public (information extracted from Oxford Dictionaries on 21/09/2017 at www.oxforddictionaries.com). It is likely that this element will be also understood in other languages as the corresponding words are similar (e.g., ‘attaque’ in French, ‘ataque’ in Spanish and Portuguese, ‘attaco’ in Italian, ‘atak’ in Polish, ‘atac’ in Rumanian or ‘ataka’ in Lithuania and Bulgarian (атака)). As it does not describe any characteristics of the goods, it is distinctive. For the rest of the public in the relevant territory for which this element has no meaning, it is also distinctive.

 

The element ‘TIGER’ of the contested sign will be understood by the English-, German-, Swedish- and Slovak-speaking part of the public in the relevant territory as ‘a very large solitary cat with yellow-brown coat stripped with black, native to the forest of Asia but becoming increasingly rare’ (same dictionary and date). This same meaning may be grasped by other part of the public in other languages with very similar terms (e.g. ‘tigre’ in French, Spanish, Italian and Portuguese, ‘tygrys’ in Polish, ‘tigru’ in Rumanian, ‘tygr’ in Czech, ‘tigris’ in Hungarian or ‘tigar’ in Croatian). The tiger’s head in an aggressive attitude depicted at the bottom of the sign reinforces this meaning. As these elements do not describe any characteristics of the goods, they are distinctive. For the rest of the public in the relevant territory for which this element has no meaning, it is also distinctive.

 

Part of the public may even associate the representation behind the tiger’s head as a reference to a splashing liquid. Bearing in mind that the relevant goods are beverages, this figurative representation is weak in connection with these goods.

 

Considering what has been previously stated regarding the meaning of the element ‘ATTACK’, and also taking into account that the English word ‘VITAMIN’ will be understood in virtually all the languages of the European Union as ‘any of a group of organic compounds which are essential for normal growth and nutrition and are required in small quantities in the diet because they cannot be synthesized by the body’ (same dictionary and date) because, either the same or a highly similar word exists in all the languages of the Member states (e.g., ‘Vitamin’ in German, ‘vitamín’ in Czech and Slovak, ‘vitamina’ in Spanish, Portuguese and Italian, ‘vitamine’ in French, ‘witamina’ in Polish, etc.), the expression ‘VITAMIN ATACK’, present in the contested mark, may be associated with ‘an injection of vitamins’ by the part of the public comprising both composite elements. Bearing in mind that the relevant goods are beverages that may contain additional or supplementary vitamins, this element is weak for these goods. For the part of the pubic that does not understand the meaning of the element ‘ATTACK’ in the contested sign, in the expression ‘VITAMIN ATTACK’, only the reference to vitamins will be grasped.

 

The verbal element ‘TIGER’ together with the figurative elements in the contested sign are the co-dominant elements as they are visually outstanding. In particular, the verbal element ‘TIGER’ is depicted in a striking navy blue big lettering on a yellow background and the tiger’s head in black. The orange splashing liquid takes up more than half of the label, whereas the expression ‘VITAMIN ATTACK’ is written in substantially smaller orange lettering and placed in a secondary position as regards the element ‘TIGER’ and, therefore, it is less visually eye-catching in the overall impression of the contested mark.

 

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Contrary to the opponent’s arguments, this means that the common element, ‘ATTACK’ is not a primary element that will be focused on

 

Visually, the signs coincide in the verbal element ‘ATTACK’ which has been considered to form part of the less visually eye-catching element in the contested sign and is also a weak element for the part of the public perceiving the expression ‘VITAMIN ATTACK’ as explained before.  However, they differ in the distinctive and co-dominant first verbal element ‘TIGER’ and figurative depiction of the tiger’s head, as well as in the less distinctive verbal element ‘VITAMIN’ and the representation of the splashing liquid which is, however, co-dominant, together with the colours and the overall arrangement of the contested sign.

 

Contrary to the opponent’s claim, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). Therefore, the importance of the verbal elements and the decorative role of the figurative elements in the present case cannot be overlooked.

 

Therefore, taking into account the above-mentioned about the impact of the various elements in the overall impression of the contested mark, it is considered that the signs are visually similar to a very low degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‛ATTACK’, present identically in both signs, but that has been considered to form part of the weak expression ‘VITAMIN ATTACK’ for the part of the public grasping its meaning. Indeed, it is highly conceivable that this expression will not be pronounced at all due to its size and secondary position in the sign. The pronunciation differs in the sound of the first and distinctive element ‛TIGER’ of the contested mark, which has no counterpart in the earlier sign, and also in the sound of the word ‘VITAMIN’ in the case the expression ‘VITAMIN ATTACK’ is pronounced.

 

Therefore, the signs are aurally similar, at most, to a low degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the different scenarios in this regard.

 

On the one hand, the signs are dissimilar for the part of the public that does not associate the common verbal element ‘ATTACK’ with any meaning, while they perceive at least the concept of the tiger’s head.

 

On the other hand, the signs are similar to a low degree, for the part of the public that comprises the element ‘ATTACK’ in the earlier mark and the expression ‘VITAMIN ATTACK’ in the contested sign, considering the nuance or slight difference in the meaning of the expression of the contested sign as a whole and because the overlap occurs in a weak element in the contested sign, while some of the differentiating elements convey different distinctive concepts.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

 

4. Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

 

5. Global assessment, other arguments and conclusion

 

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

 

According to the same line of case-law, the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (judgment of 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

 

It cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 84).

 

As stated in section c) of the present decision, the signs are visually similar to a very low degree, aurally similar, at most, to a low degree and conceptually similar to a low degree or even dissimilar.

 

As also indicated previously, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

 

In the present case, even considering that an average degree of attention will be displayed by the public at large when purchasing the goods, as well as taking into account that the goods are identical, the striking differences between the signs, particularly form a visual point of view, are sufficient to counteract these factors.

 

The opponent claims that, ‘according to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects and cites the above-mentioned judgment of 23/10/2002, T-6/01, Matratzen Concord, EU:T:2002:261, inter alia. However, it should be pointed out that in the present case, the coinciding element is less visually eye-catching in the overall impression of the contested sign and also forms part of a weak expression for the part of the public that perceives its meaning, and, thus, it cannot be considered to be a relevant aspect in the contested sign. Therefore, the Opposition Division considers that the case referred to by the opponent is not relevant to the present case and, therefore, the opponent’s claim must be rejected.

 

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because the elements of difference were considered to have less distinctive character in connection with the relevant goods (‘ATTACK’ vs ‘SOCCER ATTACK’ or ‘PROmotion ATTACK’) or there were no more distinctive or dominant elements than others in the signs (‘ATTACK’ vs ‘Aqua Attack’ or ‘ZACK ATTACK’). Furthermore, it should be pointed out the particularly striking visual differences in the present case and their importance regarding the relevant consumer goods.

 

Considering all the above, even taking into account the identity of the goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

The opponent has also based its opposition on international trade mark registration designating the European Union No 1 217 783 for the figurative mark . This other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains additional verbal elements as ‘Body’ and ‘SPORTS NUTRITION’ and also a figurative arrangement including the red colour which are not present in the contested trade mark. Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

 

 

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

 

Article 8(4) EUTMR was raised in connection with German Company name ‘Body Attack Sports Nutrition GmbH & Co. KG’ used in the course of trade in relation to goods in Classes 5, 29, 30 and 32.

 

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

 

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

 

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

 

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

 

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

 

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

 

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

 

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

 

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

 

On 25/05/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. After an extension of the time limit requested by the opponent, this time limit expired on 30/11/2016.

 

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

 

The mere fact that the sign is registered in accordance with the requirements of the respective national law is not in itself sufficient for the application of Article 8(4) EUTMR. As mentioned above, the use requirement in Article 8(4) EUTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a business identifier alone, that is, without any requirement relating to use.

 

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

 

 

COSTS

 

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

 

 

 

 

The Opposition Division

 

 

Carlos MATEO PÉREZ

Eva Inés PÉREZ SANTONJA

Vanessa PAGE

 

 

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

 

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.